Katherine M. Bond, Esq

The owner of the UGG footwear brand has sued Wal-Mart, JC Penney, and Sears for allegedly selling knockoffs of UGG boots.

Plaintiff Deckers Outdoor Co.’s suits include causes of actions for:

federal trademark infringement,

trade dress infringement

false designation of origin and false description,

federal trademark dilution,

patent infringement, and

common law trademark infringement and unfair competition.

The complaint noted that it has been 14 years since UGG boots were first featured on Oprah’s Favorite Things® and Oprah Winfrey declared that she “LOOOOOOOVES her UGG boots.” The popularity of the fuzzy boots has since grown, according to the complaint, as they have been embraced by celebrities including Kate Hudson and Sarah Jessica Parker.

The “Bailey Button” style of UGG boots, introduced in 2009, is characterized by:

suede boot styling,

overlapping front and rear panels on the side of the boot shaft,

exposed fleece-type lining edging the overlapping panels and top of the boot shaft, and

one or more buttons on the side of the boot shaft near the overlapping panels.

The one-button and three-button versions of the boots are covered by US design patents, according to the complaints.

Deckers claims that the defendants knowingly and willfully copied the styles of its Bailey Button boots “in an effort to exploit Deckers’ reputation in the market.”

The complaint alleges that when consumers type “Ugg” into the Wal-Mart website search engine they are directed to boots that are confusingly similar or nearly identical to UGG boots.

According to the complaint,

Wal-Mart’s offering of products in connection with the UGG mark improperly trades off the goodwill Deckers has established in the UGG mark in order to improperly attract customers to Wal-Mart’s competitive products.

Deckers is seeking injunctions against sales of the allegedly infringing boots, along with treble damages based on the defendants’ profits.

Deckers has been active in pursuing UGG counterfeiters. In 2010, its anti-counterfeiting efforts led to the seizure of more than 420,000 pairs of fake boots and the takedown of over 30,000 auction sites selling counterfeit UGG products.

If you have questions about trademark infringement or trade dress infringement, contact our office to arrange a free consultation with one of our trademark lawyers.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Google and Viacom have settled a seven-year-old lawsuit in which Viacom charged Google with copyright infringement for enabling the streaming of Viacom’s television programs via Google’s YouTube unit.

Viacom sued Google for $1 billion in 2007, after Google bought YouTube for about $1.65 billion in 2006.

Viacom owns the Paramount movie studio and cable networks such as MTV, Comedy Central, and Nickelodeon.

The dispute involved clips users had uploaded from shows like “The Daily Show with Jon Stewart,” “South Park,” and Sponge Bob Square Pants.” YouTube was accused of illegally distributing 79,000 copyrighted videos on its website between 2005 and 2008.

The details of the settlement were not disclosed, but reportedly did not involve a monetary payment by either company.

In 2012, Google announced a licensing agreement with Paramount under which it obtained the rights to show 500 movies, including “The Godfather” trilogy and “Ferris Bueller’s Day Off” on YouTube and Google Play.

In April, 2013, a US district judge granted summary judgment for YouTube, on the grounds that there was no evidence that the site’s executives know about the specific Viacom-owned clips that Viacom claimed were infringing. The judge rejected Viacom’s argument that YouTube should actively monitor the content being uploaded to its site at the rate of more than 24 hours of video every minute.

The judge concluded that YouTube was protected by the “safe harbor” provisions of the Digital Millennium Copyright Act (DMCA).

Viacom appealed that decision to the Second Circuit, which has not yet heard oral arguments or issued an opinion.

Under the DMCA, copyright owners have the burden of identifying infringing material posted by end users on sites such as YouTube. The DMCA limits the liability of online service providers for copyright infringement by others, as long as the service providers comply with the DMCA’s “notice and takedown” procedures.

If you have questions about liability for copyrighted material posted by third parties on your website, and if you want to assure that you are complying with the DMCA, contact our office to arrange a free initial consultation with one of our copyright attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

The Federal Circuit Court of Appeals has affirmed a lower court’s dismissal of a $1 billion patent suit against Qualcomm brought by Gabriel Technologies Corp.

The case involved the use of GPS technology in pagers. Gabriel alleged that Qualcomm had infringed Gabriel’s patents and that Qualcomm had invented the technology for which Qualcomm was issued patents.

The district court found that Gabriel failed to present any evidence that Gabriel’s employees contributed to Qualcomm’s patents.

The Court of Appeals also affirmed the district court’s order that Gabriel must pay Qualcomm $12.4 million in sanctions for bringing a baseless suit with “obvious shortcomings.” The sanctions are intended to cover Qualcomm’s attorney’s fees.

Since Gabriel is in bankruptcy, Qualcomm will have to work with the Bankruptcy Court to collect the award.

It is unusual for a party to be ordered to pay the other side’s attorney’s fees in patent litigation. As we previously discussed, the US Supreme court is reviewing cases involving the standards for awarding attorney’s fees in patent cases.

In Qualcomm, the Court of Appeals noted that in many cases it is hard to find evidence that a party acted in subjective bad faith in bringing a case. However, said the court, “The record contains emails demonstrating that the Gabriel plaintiffs maintained their suit long after they recognized that their claims were without merit.”

For example, the court referred to an email in which one Gabriel executive reported to another the difficulty the company was having finding a law firm to take its case.

“They won’t touch this case because we have no case. Just a lot of talk,” said the email.

If you anticipate being involved in patent litigation, contact our office to arrange a free initial consultation with one of our patent attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Schlumberger Ltd.,the world’s largest oilfield services company, has sued its former deputy general counsel in charge of intellectual property, claiming that she stole the company’s trade secrets before leaving the company to join Acacia Research Group.

Former Schlumberger counselCharlotte Rutherford is now a senior vice president at Acacia. She had been with Schlumberger since 1996.

Acacia is a firm that acquires and licenses patents and engages in patent litigation. The firm has been called “the mother of all patent trolls” and it has generated over $1 billion in revenue.

Schlumberger claims that Rutherford copied confidential trade secret information onto USB flash drives and deleted the information from her company-owned laptop just before she left for Acacia.

Schlumberger also claims that Rutherford asked Schlumberger’s information technology department to help her extract files from her company laptop, and that she took hard copies of confidential documents.

Acacia’s CEO said the case was without merit and a “bullying tactic” in response to a patent infringement case against Schlumberger.

Schlumberger admitted that the recent filing of a patent case against it had led it to investigate Rutherford, but did not identify the specific case.

On February 4, Schlumberger was sued for infringing a Dynamic Geosolutions patent in a case filed in Austin, Texas. The patent at issue is for a “Method and system for dynamic, three-dimensional geological interpretation and modeling,” and is used to analyze oil and gas reservoirs.

The inventors entered into a partnership with Acacia to license and enforce the patent in 2013.

The complaint charges that instead of seeking to license the invention, Schlumberger and other companies began using their own infringing software to provide consulting services and training to customers.

If you are concerned about whether your company is taking adequate steps to protect your trade secrets, contact our office to arrange a free initial consultation with one of our attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

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The US Supreme Court has ruled that standing in a federal false advertising case is not limited to the advertiser’s competitors. The court held that it is sufficient for standing if the plaintiff has a commercial injury “flowing directly from the deception wrought by the defendant’s advertising.”

The case arose out of a dispute between Lexmark International Inc., a maker of laser printers and printer cartridges, and Static Control Components Inc., which sells parts and supplies for reusing used printer cartridges (including Lexmark’s).

For certain expensive printers, Lexmark offered a “Prebate” program under which buyers could get print cartridges at a discount if they agreed to return them to Lexmark for refilling.

To prevent users from having the cartridges refilled by third parties at a lower cost, Lexmark included a function on a computer chip on each cartridge. A refurbished cartridge would not work unless Lexmark replaced the chip.

Static made a “Smartek” chip that mimicked the effect of the Lexmark chip and sold it to third parties that refurbished Lexmark cartridges. The Static chip included an exact copy of Lexmark’s Toner Loading Program.

Lexmark first sued Static for copyright infringement in 2002, and in 2003 won a preliminary injunction against Static. In 2004, Static filed an action seeking a declaration that its redesigned chips did not infringe Lexmark’s copyrights. Lexmark responded with counterclaims including claims of patent infringement.

Under the Lanham Act (which governs false advertising and trademark claims), Static alleged that Lexmark had engaged in two types of false or misleading conduct:

Lexmark “purposely misleads end users” by leading Prebate customers to believe that they are legally required to return cartridges to Lexmark after use, and

Lexmark “sent letters to most of the companies in the toner cartridge remanufacturing business” falsely alleging that it was illegal to sell refurbished Prebate cartridges and to use Static’s products to refurbish the cartridges.

Static alleged that Lexmark had disparaged its business and products by alleging that Static’s products infringed Lexmark’s patents and that its business was therefore illegal.

The Supreme Court determined that statements like Lexmark’s (given the requisite intent and resulting harm) can be the basis for an action for false advertising even though Static and Lexmark are not competitors in the chip market.

The Supreme Court’s “zone of interest and proximate cause” approach probably expands the scope of federal false advertising claims. This is significant because libel (including trade libel) is still generally covered in CGL insurance policies.

If you have questions about false advertising, copyright infringement, or patent infringement, contact out office to arrange a free initial consultation with one of our intellectual property attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Mattel Inc. has won summary judgment in a case involving a former freelance writer of “He-Man” mini comics.

In 1981, Mattel engaged Donald Glut to create the backstory for Mattel’s “Masters of the Universe” toy characters, including “He-Man.” Ultimately, Glut prepared a written treatment and four “mini-comics” that related and expanded upon the backstory.

In 2013, Glut’s lawyer notified Mattel that Glut owned the copyright in the treatment and that Glut intended to terminate Mattel’s “implied license” to it. Mattel then preemptively sued Glut seeking a judicial declaration that Mattel, not Glut, owned the copyright in the treatment and that Glut waited too long to assert his alleged rights.

The gist of Mattel’s suit was that Glut was hired to create the treatment under a “work-for-hire” contract and that he was barred from claiming otherwise more than 30 years after the fact.

According to the US Copyright Office, a “work-for-hire” is:

a work prepared by an employee within the scope of his or her employment or a work specially ordered or commissioned in certain specified circumstances. When a work qualifies as a work made for hire, the employer, or commissioning party, is considered to be the author.

Mattel also asserted that Glut’s work on the treatment gave him no rights in the underlying intellectual property associated with the toys.

Glut claimed that he had licensed the Masters of the Universe rights to Mattel and that he intended to terminate his “license” in 2016.

Mattel asserted that Glut’s claim was barred by the doctrine of laches, a defense that prevents plaintiffs from “sleeping” on their rights to the detriment of defendants.

During the period from 1981 until Glut began to assert his claim, Mattel said that it had developed the toy franchise based on the assumption that Glut had no intellectual property ownership interests to assert.

Glut had filed his own summary judgment motion in November, claiming that Mattel was unable to produce the original work-for-hire documents. This motion was mooted by the court’s ruling.

Mattel has licensed the rights to the Master of the Universe toy line to Sony Pictures, which is reportedly planning to create a new film franchise based on the characters.

If you are concerned about whether your company’s agreements with freelancers are sufficient to protect your interests in their work, contact our office to arrange a free initial consultation with one of our copyright attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

The Ninth Circuit Court of Appeals has ruled that copyright registration of a collective work also registers the component parts within it.

The case involved Alaska Stock, a stock photography agency that registered large number of photographs with the copyright office at one time by registering CD catalogs of the photos. For “name of author” on the copyright registration form, Alaska Stock listed only three specific names and added “& 103 others.”

Under conditions specified by the US Copyright Office, large groups of published photographs can be registered together using a single form and by paying a single fee.

Alaska Stock licensed Houghton Mifflin Harcourt Publishing Co. to use the registered pictures in exchange for a fee based on the number of publications the photos were used in.

When Houghton Mifflin and its printer greatly exceeded the number of publications, Alaska Stock sued for copyright infringement.

Even though Alaska Stock’s form of registration was consistent with the Copyright Office’s procedure for more than 30 years, the district court dismissed its claims because it had not provided the names of each photograph and photographer.

The district court stated that the Copyright Office’s administrative practice did not supersede the clear statement of the copyright statute that required titles and authors to be listed individually.

The Ninth Circuit reversed, deferring to the Copyright Office’s interpretation of the law, noting that:

A longstanding administrative interpretation upon which private actors have relied aids in construction of a statute precisely because private parties have long relied upon it.

The court also noted that:

We are not performing a mere verbal, abstract task when we construe the Copyright Act. We are affecting the fortunes of people, many of whose fortunes are small. The stock agencies through their trade association worked out what they should do to register images with the Register of Copyrights, the Copyright Office established a clear procedure and the stock agencies followed it. The Copyright Office has maintained its procedure for three decades, spanning multiple administrations. The livelihoods of photographers and stock agencies have long been founded on their compliance with the Register’s reasonable interpretation of the statute. Their reliance upon a reasonable and longstanding administrative interpretation should be honored. Denying the fruits of reliance by citizens on a longstanding administrative practice reasonably construing a statute is unjust.

If you have questions about the registration of collective works, or copyright law in general, contact our office to arrange a free initial consultation with one of our copyright lawyers.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.